Importance of O-3 Notice – Trademark renewal reminder

We bring to you a guest post by Nemish Zaveri, a fourth year law student from Institute of Law, Nirma University with a keen interest in intellectual property laws. In this article, he presents his views on the requirement to serve the O-3 notice. An O-3 notice is a reminder sent to the registered proprietor of a trademark before the validity of his trademark expires.

Where a statute authorises interference with properties or other rights and is silent on the question of hearing, the courts would apply rule of universal application founded on the principles of Natural Justice– Stanley Alexander de Smith.

Trademark renewal

A trademark is an important asset to an organization. Considerable efforts are put to secure a registration of the trademark and protection of the same is given utmost priority in order to enhance the value of trademark. A trademark once registered comes with rights to use it in perpetuity provided that the trademark is renewed diligently. In India an application for renewal of trademark can be made six months before the expiration of the last registration of the trademark. If not so renewed, the trademark may be removed from the Trademarks Register. The law which governs trademark in India, the Trademarks Act, 1999, (the”Act”) and its Rules provide for the duration of the validity, the essence of renewal and the power of the Registrar to remove or restore a trademark. The Act further provides that a trademark can be renewed every ten years and that if the formalities to renew the application are not adhered to, then the registrar may remove the trademark from the Register. The procedure for renewal and restoration of a trademark is dealt by the Trademark Rules, 2002.

Judicial interpretation

The Delhi High Court in Malhotra Book Depot vs. Union of India,(W.P No. 7882 of 2010) while deciding on the Registrar’s duty to issue an O-3 notice to the proprietor of the trademark before removing his mark from the Register held that the Registrar was mandated to issue O-3 notice to the proprietor of the trademark before the trademark’s validity expired. The court further held that if pursuant to this O-3 notice, the proprietor failed to renew his trademark, his trademark could be removed from the Register.

A division bench of the Bombay High Court in Cipla Limited vs. The Registrar of Trademarks (W.P No. 1669 of 2012) affirmed the view taken by the single bench judge of the Delhi High Court as above and held that before removing a mark from the Register, an O-3 notice must be sent to the registered proprietor of the mark.

Analysis

My understanding of the question of law formulated by both the Delhi and the Bombay High Courts was whether there existed an obligation upon the Registrar to issue an O-3 notice to the proprietor of a registered trademark before taking steps towards the removal of the mark?

The courts ruled that there is an obligation upon the Registrar to issue an O-3 notice before taking steps to remove the mark from the Register and the court reasoned that Section 25(3) of the Act must be read together with Rule 64 of the Trademarks Rules. These provisions of law essentially speak of the Registrar’s obligation to send a notice to the registered proprietor before the trademark’s validity expires.

Also, India being a common law country follows the principles of natural justice before taking any adverse action. The rule of audi alteram partem , which means, “hear the other side too”, is relevant in the case. The reason for issuing an O-3 notice, in my view, is to uphold this natural justice principle. Let us assume that an O-3 notice never existed in the Trademarks Act and Rules, what then? Citing non-renewal, many marks would be removed from the register.

The proprietor, at the outset, takes pains to finalize a name which would be registered, he applies for registration, he manages to reply to the objections (if any), and it is only then that he secures a successful registration. All these efforts ensure legal protection to his right, and as a part of ensuring the perpetual enjoyment of his right, a renewal of the mark on a timely basis is called for and it is the O-3 notice which reminds the proprietor that his mark is due for renewal. Hence, the Registrar is bound to issue a notice to the proprietor of the registered trademark reminding him of the upcoming renewal requirement.

However, if the proprietor of the trademark fails to renew his mark even after he received the notice, the law still lets him renew his trademark by filing his renewal application along with the usual fee and a surcharge within six months from the expiration of the last registration of the trademark. the law therefore provides ample opportunities for renewal of a trademark.

It is however the prima facie duty of the proprietor to ensure the renewal of his trademark. It would not be correct to blame the Registrar for removing a trademark from the Register for a proprietor’s failure to comply with procedural formalities. After all a trademark is an intellectual property right which the proprietor can enjoy till perpetuity when renewed unlike other rights such as copyright or patents which have a limited period of protection and enjoyment and cannot be renewed.

Suggestions and recommendations

The Registry should create a database and e-mail addresses of the attorney or agent of the proprietor or any other person responsible for the proprietor’s trademark. It could then use this database to send an e-notice to such persons who can further comply with the notice and ensure a timely renewal. Of course, here again, the duty is also upon the agents, attorneys or the proprietors to ensure that the Registry is provided with current, accurate and in-use email addresses. This would ensure efficiency and speedy renewals.

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